America-Israel Patent Lawtag:typepad.com,2003:weblog-18362352017-08-03T10:41:09+03:00Information and insights into US and Israel patent law and practice, particularly in pharma and life sciencesTypePadA Few Words on Modified Examination in Israel Under Section 17(c) of the Statutetag:typepad.com,2003:post-6a0112793f1c9d28a401b8d29c5ebe970c2017-08-03T10:41:09+03:002017-08-03T10:41:09+03:00We’ve blogged before about modified examination in Israel under section 17(c) of the statute. Per §17(c), if a corresponding patent is granted in certain other jurisdictions, one can gain a quick allowance in Israel by amending the claims so that they’re identical to the ones granted elsewhere, and requesting allowance...Daniel Feigelson

We’ve blogged before about modified examination in Israel under section 17(c) of the statute. Per §17(c), if a corresponding patent is granted in certain other jurisdictions, one can gain a quick allowance in Israel by amending the claims so that they’re identical to the ones granted elsewhere, and requesting allowance under §17(c). This provision was added to the statute in 1995, following several years as policy adopted by the ILPTO to reduce its backlog.

Usually, implementation of §17(c) is straightforward: the Israel application and the foreign patent share all priority claims in common. But from time to time, the question arises, what constitutes a corresponding patent (or in the words of the statute, a parallel patent/application)? Here are the relevant parts of the statute, translated into English:

(1) the applicant filed a patent application for the same invention (herein – “parallel application”) and was granted the patent, in a country whose name the Commissioner has officially published (herein – “parallel patent”), and one of the following conditions is met:

(a) a legally valid priority claim was made in Israel on the basis of the parallel application, per section 10 of the statute;

(b) a legally valid priority claim was made for the parallel application from the Israel patent application;

(c) a legally valid priority claim for the Israel application was made from an application filed in a WTO country, and from that WTO-country application a legally proper priority claim was made for the parallel application; * * *

§17(c)(1)(a) and §17(c)(1)(b) are easy enough to understand: the IL application claims priority directly from the parallel application, or vice versa. Probably the most common situation, however, is that of §17(c)(1)(c), where the IL application and the parallel patent share a common priority claim. For example, the Applicant files a US provisional, then files a PCT claiming priority from the provisional, then enters the national phase in Israel and the USA (or Europe). The US (or EPO) patent is granted. Since both the IL and US (or EPO) cases claim priority from a common predecessor application (the provisional) filed in a WTO country (the USA), the condition of §17(c)(1)(c) is met. So if the claims in Israel are amended to be identical to those of the US (or EPO) patent, allowance under §17(c) can be requested.

Now let’s complicate things a bit. Suppose that there are two US provisionals, and the PCT claims priority from both provisionals, as do the national phase applications in the EPO and in Israel. Does this make a difference? As a practical matter, no: the ILPTO will normally grant the §17(c) request on the basis of the granted EP. And this seems eminently reasonable: since the two cases both derived from the same PCT, and share the same priority claims, they should be regarded as corresponding (or “parallel”) applications.

Nevertheless, it’s worth noting that nothing in §17(c)(1)(c) says that all the priority claims between the parallel application and the Israel application must be held in common. It merely says that there needs to be a common priority claim. Let’s suppose, therefore that in the case of the two provisionals serving as priority applications, the parallel patent is a US patent that was filed as a national phase of the PCT. But let’s also suppose that, for some reason, in the US the applicant decided to forego the priority/benefit claim to the earlier provisional. Should that change the calculus for §17(c) in Israel? I would think not, since it means the US application was actually exposed to a larger group of prior publications than if the claim to the earlier provisional had been maintained, and, strictly speaking, the condition of §17(c)(1)(c) has been fulfilled. Would it matter if it was the second provisional the benefit of which was waived in the US national phase case? Again, presumably not, since here too the US application would have potentially subject to a larger group of prior publications than if the claim to the later provisional had been maintained, and, strictly speaking, the condition of §17(c)(1)(c) has been fulfilled – there’s a common priority claim between the US and Israel cases.

But now let’s suppose that it’s the Israel application that forswears one of the priority claims. Now what? Logic would suggest that, in the absence of one of the common priority claims, it’s now the Israel application that’s potentially exposed to a larger group of prior publications, and therefore the grant of a US (or EP) patent that includes two priority claims cannot presumptively mean that the IL claims are also allowable. But that’s not what the statute actually says: all that’s required, per the statute, is one common, valid priority claim.

Another question arises with respect to the situation where both §17(c)(1)(a) and §17(c)(1)(c) are applicable. Suppose that a US provisional is filed, then six months later a US non-provisional is filed claiming the benefit of the provisional, and within a year of the provisional filing an IL application is filed claiming priority from both. The US case is granted. Whither the IL case under §17(c)? The two applications share a common priority per §17(c)(1)(c) (viz., the provisional), and the IL case claims priority directly from the US case that’s now been granted, in accordance with 17(c)(1)(a).

The ILPTO’s view, as set forth in its examination guidelines, is that it’s not necessary for the Israel application and the foreign patent to share ALL priority claims, but the claimed invention must be supported by the disclosure of the common priority document. So in the situation where both §17(c)(1)(a) and §17(c)(1)(c) are applicable , the ILPTO will probably grant the §17(c) request. Although I suppose that if one wishes to split hairs, it could be argued that, by the letter of the statute, this wouldn’t be an acceptable application of §17(c)…but I’m not going to explain here why that might be so.

One can imagine even more complicated fact patterns in which questions about the applicability of §17(c) may arise. Suppose, for example, that Applicant files provisional 1, then a PCT claiming priority from that provisional, then a US national phase application from the PCT, then a second provisional, then both a US CIP that claims the benefit of everything that went before it, and an Israel application that claims priority from prov 2 and the CIP. The CIP is granted, and the claims in Israel are amended to correspond to those of the granted CIP. The chart below shows the relationships. The question is, Can §17(c) be invoked here?

USA

P1

→

PCT

→

US NP

→

→

CIP

P2

→

CIP

↓

↓

IL

priority claimed

priority claimed

Seems to me that the answer is a definite “Maybe” - it depends on the particular facts. But the good news is that, per the ILPTO’s examination guidelines, the situation does not per se preclude §17(c) treatment.

Israel PTO electronic filing system: "Don't Give Us Your Prior Art Until We've Asked For It"!tag:typepad.com,2003:post-6a0112793f1c9d28a401b7c8dbc48f970b2017-03-02T14:50:12+02:002017-03-02T14:51:29+02:00I feel like every time I use the ILPTO's electronic filing system, I discover another bug...and another potential work-around. The latest? Read on. We've got a national phase application that's been sitting at the ILPTO for several years. They still haven't published it under 16A (18-month publication or soon-thereafter-for-national-phase-filings). Needless...Daniel Feigelson

I feel like every time I use the ILPTO's electronic filing system, I discover another bug...and another potential work-around. The latest? Read on.

We've got a national phase application that's been sitting at the ILPTO for several years. They still haven't published it under 16A (18-month publication or soon-thereafter-for-national-phase-filings). Needless to say, they haven't issued a pre-examination (S18) letter either, in which they ask for submission of an IDS-like document and some other information.

But corresponding patents have been issued in several countries, including some from which we can do a 17(c) request (amend the claims in Israel to correspond to the claims granted elsewhere and piggyback on those). So I went into the system to see if we could first file a S18 response. As expected, the answer is, "NO. YOU CAN'T FILE A S18 RESPONSE BECAUSE WE HAVEN'T SENT YOU A S18 LETTER, YOU NINNY!" Well, it wasn't quite in those words, but you get the idea. The system's fascist tendencies preclude us from filing a S18 response until we have been summoned to file such a response. Even though we're ready to go with it.

Realizing that "no" is not the right answer, on a hunch I poked around and found that we CAN file a supplemental S18 response (השלמת תשובה לסעיף 18).

Even though the system won't let us file, and therefore we haven't filed, an initial S18 response.

As the late Anna Russell would say, "I'm not making this up, you know!"

At least the system will let us file the 17(c) request.

Patent Eligibility of Computer-Implemented Inventions at the ILPTOtag:typepad.com,2003:post-6a0112793f1c9d28a401a73d9e99c1970d2014-03-31T23:30:00+03:002014-04-01T00:31:31+03:00Earlier today, the U.S. Supreme Court heard oral arguments in Alice Corporation v CLS Bank. The question before the court is whether or not an otherwise patent-eligible invention becomes patent-ineligible if the claim recites that the invention is implemented on a computer. There's plenty of coverage of that case elsewhere....Daniel Feigelson

Earlier today, the U.S. Supreme Court heard oral arguments in Alice Corporation v CLS Bank. The question before the court is whether or not an otherwise patent-eligible invention becomes patent-ineligible if the claim recites that the invention is implemented on a computer. There's plenty of coverage of that case elsewhere. Of interest to applicants in Israel is a recent decision of the Israel Commissioner of patents in which this same question was addressed.

The case concerned Israel Patent Application No. 190125, the national phase of PCT/IL2006/000921 (WO 2007/03198). (Theoretically, the Israel application has been published online and its file history visible over the internet, but the ILPTO still hasn't gotten around to posting any of the documents online.) After several rounds of prosecution during which the examiner refused to allow the application, the applicant amended the claims to match those of the corresponding US 8199935, and asked that the application be allowed pursuant to Section 17(c) of the statute.

As has been discussed on this blog before, 17(c) is meant to reduce the ILPTO's workload, by allowing it to piggyback on the work of other offices it respects with regard to novelty, inventive step, sufficiency of disclosure and unity of invention. 17(c) does not overcome patent-eligibility issues, and the statute reserves to the Commissioner and the head examiner the ability to refuse a 17(c) request if the Commissioner finds an undefined "special reason" not to grant the request.

In the present case, Examiner said that the new claims (below) were not directed to a patent-eligible invention, being directed "entirely to the field of software...and therefore being no more than an abstract application of a pure thought process and/or a business method..."

1. A system for facilitating access to multiple audio layer items over a communication network comprising:

a network accessible media database, connected to a communication network, which stores multiple audio layer items each having a plurality of separate and different audio layers which are independently accessible; and

at least one subscriber application for receiving a user selection of at least some of said multiple audio layer items, connecting to said media database, and receiving at least some of said plurality of audio layers;

wherein said at least one subscriber application having a mixing module which digitally synchronizes and mixes said at least some audio layers to create an audio remix representing a mixed digital audio signal.

a port for communicating with a media database via a communication network; and

an interface configured to allow a user to select a multiple audio layer item from a plurality of multiple audio layer items each having a plurality of separate and different audio layers and to address separately at least some of said plurality of separate and different audio layers of said selected multiple audio layer item; and

a mixing module configured for digitally synchronizing and mixing at least some of said plurality of audio layers to create locally, in the memory of a computing unit, a remix representing a mixed digital audio signal.

19. A remote sale system for facilitating access to layered media items, said remote sale system comprising:

a connecting device for connecting a plurality of customer computers located at remote sites to a central computer associated with a database of a plurality of layered audio items each comprising a plurality of separate and different audio layers;

a management device for receiving, via a network from a plurality of remote client terminals of a plurality of potential customers, a plurality of requests each to separately access at least one of a plurality of audio layers of a selected layered audio item of said plurality of layered audio items and providing, in response to each said request, a separate access to respective said at least one audio layer of said selected layered audio item, each said audio layer is associated with a price; and

a purchasing device for debiting said plurality of potential customers according to said separate access and respective said price.

23. A system for facilitating access to multiple audio layer items over a communication network comprising:

a network accessible media database, connected to a communication network, which stores a plurality of multiple audio layer items such that each layer of each said audio layer item is independently accessible; and

at least one subscriber application for receiving a user selection of at least one of said multiple audio layer items, connecting to said media database, and receiving said first multiple audio layer item, said at least one subscriber application having a mixing module configured for digitally synchronizing and mixing at least one selected audio layer of said selected multiple audio layer item to create locally an audio remix representing a mixed digital audio signal.

In deciding the matter, the Commissioner first dispensed with the notion that there might be a "special reason" to refuse the 17(c) request. He reasoned that the claims had been so significantly changed during the course of prosecution that there was no basis to think that the prior art cited against the first two vesions of the claims was still relevant to the newest version sumitted as the basis for the 17(c) request.

This left open the question of whether or not the claims defined a patent-eligible invention. The Examiner had asserted that the addition of the recitation "a mixing module" in the claims did not render them patent-eligible, since this was just a standard operation for a computer, and there was no new "reciprocity" between the various components of the system. The Commissioner disagreed, saying that the end result of the operation of the system was to create a new audio file made partially from layers of the original audio files via a system that facilitated remote access and work. Thus, he concluded, the final result was achieved through the creation of new reciprocal connections between the physical components of the system, and the invention was patent-eligible.

While it's good that the Commissioner sided with the view that just because something is done on computer, that doesn't make that something patent-ineligible, he reasoning is still faulty in that at points he mixes what are properly questions of novelty and inventive step into the patent-eligibility analysis.

It's not clear from the Commissioner's decision how this matter came before him in a way that necessitated a written decision, and as noted, none of the documents in this case that might shed light on the matter have been posted online. Nevertheless, it's clear that Because only the Commissioner and the head examiner can refuse a 17(c) request, and because

More Monty Python at the Israel Patent Office (or is it Mel Brooks?)tag:typepad.com,2003:post-6a0112793f1c9d28a4019b0211d789970b2013-12-03T17:00:23+02:002013-12-03T17:00:23+02:00Israel has three different procedures for expediting the examination of patent applications. One of these procedures, section 17(c) of the statute, concerns substantive examination of the application. Under 17(c), the Commissioner from time to time publishes a list of recognized patent-granting jurisdictions. The grant of a corresponding patent in one...Daniel Feigelson

Israel has three different procedures for expediting the examination of patent applications.

One of these procedures, section 17(c) of the statute, concerns substantive examination of the application. Under 17(c), the Commissioner from time to time publishes a list of recognized patent-granting jurisdictions. The grant of a corresponding patent in one of these recognized jurisdictions can then be used as basis for allowance of the Israel application (fulfilment of the requirements for unity of invention, novelty, inventive step, sufficiency of description, and basis for and clarity of the claims), if the Israel claims are amended to be substantially identical to the foreign claims and the Israel application shares priority with the foreign patent. This procedure is only useful once substantive examination of an application has begun; the fact that a corresponding foreign patent has been granted can’t be used to induce the ILPTO to actually examine the application.

The upshot of 17(c) practice is that it frees up examiners to spend their time examining other cases, without duplicating the efforts of examiners in other countries.

In this context, it’s worth mentioning that during his tenure from 2003 through 2010, the previous Commissioner expanded 17(c) practice in two ways. First, rather than making applicants wait for the ministerial act of the granting of the foreign patent, he deemed a notice of allowance sufficient to invoke 17(c). Second, he stated that a positive PCT examination report could be used to establish the novelty, inventive step and unity of invention of the claims of an Israel national phase application (or an Israel application which was later filed as the PCT that received the positive examination report). In this way, he further reduced the ILPTO’s workload.

The other two procedures are not directed to substantive examination but to the order of examination, and enable an applicant to have its application moved to the front of the examination queue. The first of these is the patent prosecution highway. Israel has bilateral PPH agreements with the USA, Denmark, Japan, Finland and Canada, and PPH-PCT agreements with all these countries except Denmark. (And I noted yesterday, in a display of multiple personality disorder it also has a PPH-PCT agreement with itself. Really, I can’t make this stuff up.) Per the PPH, an applicant can ask to have his application examined out of turn based on a positive PCT WOISA or IPRP from a country with which Israel has a PCT-PPH agreement.

The second procedure for getting one’s application moved to the front of the line is similar to the old “petition to make special” practice in the USA: you ask the ILPTO to move your application to the front of the line. Historically this was set out in Rule 35, which stated that an applicant could ask that his patent application be examined immediately on the basis of “reasonable grounds”; these were typically the advanced age of the inventor, imminent launch of a product to be protected by the patent, or concern about possible infringement.

In July 2012 a new statutory section, 19A, was introduced, in which subsection (a) codified, clarified and replaced the prior Rule 35 practice. Section 19A(a) provides six different reasons one can give for advancing the examination of one’s patent application, but it is the second one listed that is of interest here: “A notice of the Commissioner regarding the possibility of advancing the examination on the basis of examination of a corresponding application under the conditions and in the countries indicated by the Commissioner”.[1]

To date, the Commissioner hasn’t published a list of countries under 19A(a)(2). However, in a notice published at the beginning of October, the Commissioner said that a PCT-PPH request would be viewed as a request under 19A(a)(2) to begin the examination of a national phase application in Israel. It’s not clear why the need was felt to explicitly tie PCT-PPH to the new statutory provision. The Commissioner could have let things stand as they were.

But at least the October announcement does no harm to the PCT-PPH program. Where the October announcement took a bizarre turn was when it concluded with the statement that the Commissioner was rescinding the policy of allowing partial substantive examination on the basis of a positive PCT work product, which was published in circular MN 71 of the previous Commissioner. That’s a non-sequitur: PCT-PPH and 19A(a) concern the order of examination, not substantive examination – a fact the Commissioner himself pointed out in the October announcement! Why rescind the existing policy regarding partial substantive examination, and force examiners to do examination work concerning industrial applicability, novelty, inventive step and unity of invention, when someone in another respected patent office has already done so? Unfortunately, no reason was given for this change in policy, which seems to be a case of shooting oneself in the foot.

If the Commissioner was already going to make an announcement, he could have taken the opportunity to publish a comprehensive list of countries that can be used to invoke the 19A(a) procedure, and on that list he could have included the ISAs of the countries with which Israel has PCT-PPH agreements. Or even more easily: he could have just said that any country already recognized for purposes of 17(c) substantive examination (including its PCT ISA or IPEA, if it has one) will henceforth also be recognized for purposes of 19A(a). Which would allow applicants with patents granted in certain other countries to quickly gain allowance of their applications here, and get more pending applications out of the examination queue more quickly.

I’m not sure if the rescinding of the is more reminiscent of the Monty Python sketch in which Graham Chapman wrestles himself and wins in a knock-out, or of Cleavon Little kidnapping himself in Blazing Saddles. It’s certainly a step in the wrong direction.

[1] The other five grounds for advancing the case out of turn are (1) the advanced aged or poor health of the inventor; (3) knowledge or a well-founded suspicion of infringement of a claim of the application; (4) unreasonable delay in the commencement of examination of the application (which may be determined inter alia by comparison to the time from filing to first office action for applications in the same class); (5) the public interest; and (6) special reasons justifying such examination out of turn.

Monkey See, Monkey Do - Will Israel Do Something Dumb Just Because the US Supreme Court Did? (Or, Wither DNA Patents In Israel in the Wake of Myriad?) tag:typepad.com,2003:post-6a0112793f1c9d28a40192ab31773b970d2013-06-16T16:58:03+03:002013-06-16T17:23:56+03:00Lots of verbiage was spent in the run-up to the U.S. Supreme Court’s Myriad Genetics decision last week, lots has already been spent since the decision, and lots more will be spent in the coming weeks. To call the decision “reasoned” or “logical” is kind of like Vezzini’s use of...Daniel Feigelson

Lots of verbiage was spent in the run-up to the U.S. Supreme
Court’s Myriad Genetics decision last week, lots has already been spent
since the decision, and lots more will be spent in the coming weeks. To call the decision “reasoned” or “logical”
is kind of like Vezzini’s use of the word “inconceivable” in the
Princess Bride.

But my intent here isn’t to rant on the SCOTUS, although I
may do that in a separate post. Rather,
one of the things that interests me is the potential impact of the Myriad
decision on patents in Israel, in two respects.

The first thing I wonder about is its impact on gene patents
generally. Hitherto, Israel has
subscribed to the notion that isolated DNA is not a product of nature and is
therefore patent-eligible. One wonders
to what extent, if any, the ILPTO or courts here will be influenced by the
SCOTUS decision, and if Israel will reverse course with respect to isolated
DNA.

If the patent system here were to change tack, the mechanism
by which it would have to do so would need to be slightly different than that
enunciated so obfuscatorily by SCOTUS.
That’s because there is no patent-eligibility bar to products of nature per
se (except for plants and animals, which are barred from patent eligibility
under section 7 on moral grounds).
Rather, section 3 of the Israel statute, which defines patentable (and
by extension, patent-eligible) inventions, simply says “An invention, whether a
product or process in any technical field, which is new, useful, susceptible of
industrial use and inventive – is a patentable invention.” Israel law thus generally denies patentability
to products of nature on lack of novelty grounds. And asserting that isolated DNA already
exists in nature is something I don’t foresee the examining corps at the ILPTO
doing – as scientists they’re too sophisticated to be duped by PUBPAT-type
hand-waving into buying into that.

On a more immediate, practical level, I wonder about the
impact of this decision on already-granted gene patents in Israel that were
granted under the section 17(c) procedure, on the basis of a grant of a
corresponding patent in the USA. 17(c)
is a real work-saver for the ILPTO, since it allows one to piggyback the Israel
application on an allowed corresponding application in the USA, the EPO, the
JPO, and certain other jurisdictions.
But what happens when that corresponding foreign patent is invalidated –
and not on substantive lack of novelty or obviousness grounds, but
patent-eligibility grounds? The statute
is silent on that point. It does include
sections 17(d) and 17(e), which place some limits on the use of 17(c), but only
in the context of still-pending applications:

17(d): The Commissioner, as well as the Chief Examiner and his Deputy,
are at liberty not to accept the application [for which allowance under 17(c)
has been sought], if they determined on the basis of material at their disposal
or which was brought to their attention during the course of examination, that
the application does not fulfill the requirements detailed in subsection (c) [viz.
17(c)] or if there is another special reason not to accept the application.

17(e): If proceedings for the
cancellation of the corresponding foreign patent or opposing the grant of the
corresponding foreign patent are ongoing, the applicant shall notify the
Commissioner, no later than the date of the grant of the patent in Israel.

These sections are somewhat murky anyway – as I’ve mentioned
in earlier posts, what constitutes “special circumstances” in 17(d), and the effect
of reporting under 17(e) as well the penalty for non-reporting under 17(e), are
unclear – and prima facie they have no effect on issued patents. 17(e), for example, only imposes a
requirement to report proceedings against the corresponding foreign patent up
until the grant of the Israel patent, not after grant in Israel. On the other hand, logic dictates that if the
corresponding patent on which a 17(c) request was granted was itself invalidated
on substantive grounds, at the very least the Israel court or the ILPTO during
cancellation proceedings would need to revisit the question of substantive patentability
of the Israel patent.

Regarding 17(d), it’s worth mentioning that the ILPTO’s
examination guidelines (last updated December 9, 2012) state that if the
corresponding foreign application is from a country that has a grace period –
e.g. the USA prior to the Asinine Inventorship Assault – then the Israel
examiner must look to see if the invention was published during the grace
period, since such publication would not have been cited abroad but is citable
in Israel; and if such publication took place, the Office applies 17(d) to
refuse the 17(c) request and raise a novelty and/or inventive step
rejection. But no word on what might
constitute “another special reason” to refuse the 17(c) request. Would withdrawal from issue by the USPTO following
the Myriad decision constitute such a “special reason”?

As to 17(e), the statute doesn’t say what happens to the
Israel application if opposition or cancellation proceedings against the
foreign patent are reported, but the examination guidelines instruct examiners
to look for such proceedings (even though it is the applicant’s duty to report
such) and if such proceedings are found, to move the application from 17(c)
examination to regular examination and examine the application for novelty,
inventive step etc.

The Myriad decision effectively means that all claims
in US patents to DNA sequences isolated from natural sources are invalid and
thus unenforceable. But in the Israel
context, two things should be noted.
First, those US claims were examined and found to be novel and
non-obvious. If one is willing to accept
– as Israel law presently does – that isolated DNA, as opposed to cellular DNA,
is not found in nature, then under Israel law that isolated DNA needs to be
examined for novelty (did someone else isolate it first?) and inventive step,
which in the case of 17(c)-allowed Israel patents already occurred abroad. So the effective invalidation of the US
patent upon which an isolated DNA claim in Israel was allowed should not impugn
the 17(c) allowance retroactively.

Second, it should be stressed that the US claims
are effectively invalidated, but not formally invalidated. As a formal matter, by statute those US claims
are still presumed valid until challenged.
Following Myriad, we won’t be seeing attempts to enforce those
claims, because that would open the door to such challenges being made by
defendants, and such challenges are now trivial to make; but technically every
one of those claims is valid until a court points to a specific claim and says
it’s not valid because it’s directed to patent-ineligible subject matter. In which case there’s even less basis for
asserting the claims in Israel should be shot down because of the Myriad
decision, since at present there are no isolated DNA claims granted under 17(c)
in Israel whose corresponding US claims have been invalidated per Myriad.

It's Nice to Be Appreciatedtag:typepad.com,2003:post-6a0112793f1c9d28a4017d3d570ca9970c2012-11-06T13:00:05+02:002012-11-06T13:00:05+02:00On October 31, it was announced that the Israel PTO and the Canadian Intellectual Property Office (CIPO) had entered into a pilot PPH program. That's probably not so relevant for Canadian applicants filing in Israel: for years applicants have been able to gain allowance of their Israeli applications on the...Daniel Feigelson

On October 31, it was announced that the Israel PTO and the Canadian Intellectual Property Office (CIPO) had entered into a pilot PPH program. That's probably not so relevant for Canadian applicants filing in Israel: for years applicants have been able to gain allowance of their Israeli applications on the basis of the allowance of a corresponding case in Canada, in accordance with Section 17(c) of the Israel patents statute. While that's not quite the same as having an application jump to the front of the line, which is what the PPH does, it's almost as good, since a 17(c) request can reduce the period of substantive examination in Isarel to almost nothing.

For Israelis filing in Canada, though, the PPH procedure may be worthwhile. If your first filing worldwide is in Israel, the ILPTO will examine your application quickly, so you can get your case allowed early; and since you can delay national phase entry in Canada to 42 months, it's entirely conceivable that an Israeli applicant could file in Canada with the corresponding Israel patent application having been allowed.

What I found intriguing was that I only learned of this pilot PPH program via a Canadian associate. It seems that this news was posted clearly on the front page of CIPO's website on October 31 (see snapshot taken today).

The ILPTO's website, on the other hand, doesn't even list the new PPH program under its "news" headings: the most recent item on the "news" banner on the front page is from October 28 and concerns changes in US patent law:

When one clicks on the "news" tab on the front page, a list having a most recent entry of October 17 is what appears.

Playing with the search engine on the website, I eventually found this announcement regarding the new pilot PPH program.

It's nice to know that the Canadians appreciate Israel, even if the official Israeli response amounts to, "Take off, eh!"

Good News: USPTO, ILPTO announce Bilateral Patent Prosecution Highway (PPH) Programtag:typepad.com,2003:post-6a0112793f1c9d28a4014e894e4c2b970d2011-06-22T15:41:24+03:002011-06-22T16:15:04+03:00On June 20, the USPTO announced on its web site that it had agreed with the Israel PTO to undertake a pilot Patent Prosecution Highway (PPH) project, beginning July 1, 2011 and continuing until June 30, 2012. Under the project, a patent applicant whose application was first filed in one...Daniel Feigelson

On June 20, the USPTO announced on its web site that it had agreed with the Israel PTO to undertake a pilot Patent Prosecution Highway (PPH) project, beginning July 1, 2011 and continuing until June 30, 2012. Under the project, a patent applicant whose application was first filed in one of the two countries, and for which at least one claim has been found allowable, may request that the other office fast-track a corresponding application in the other country.

As of this writing, the link posted on the USPTO’s site for more information on this project does not contain any country-specific information regarding the program with Israel. However, the Israel PTO site does contain information in English (an explanation of how PPH works in Israel and a form to be filed when making the request), and although this writer wasn’t able to find comparable information in Hebrew from the Hebrew web site’s home page, the Hebrew PPH site is up (as noted in a press release in Hebrew that was sent out via the ILPTO’s email distribution list earlier today).

Some noteworthy points about utilization of the PPH before the ILPTO:

First, according to the information on the ILPTO web site, the claims of the Israel application must be of a scope which is identical to or narrower than that of the claims allowed by the USPTO. (This is the same requirement in place today under section 17(c) of the IL patent statute for acceptance of an application on the basis of allowance of a corresponding application in certain other countries. Note that the English instructions use the word “similar” rather than the word “identical”, which appears in the Hebrew explanation; presumably the Hebrew is in this case more reflective of the ILPTO’s intention.) Presumably, if one’s IL application doesn’t meet this requirement, an amendment may be filed concomitantly with the PPH request in order for the application to comply.

Second, a fee will be required; this is in contrast to applications utilizing the PPH in the USA, where no fee is required. And one may only request PPH status before examination of the Israel application has commenced. It’s not clear if the pre-examination request for additional information that the ILPTO sends before beginning substantive examination counts in this regard; the sensible thing would be for it not to count. Certain documentation will also need to be provided.

Thus, for applicants for whom Israel is the country of second filing, the present PPH program effectively amounts to a speeded-up version of the existing provisions under section 17(c) of the statute; the PPH merely provides an additional way to accelerate examination in Israel, beyond the currently accepted reasons for accelerating examination (e.g. potential infringement, imminent commercialization of the invention, etc.). It therefore appears that applicants for whom the USA is the country of second filing (i.e. who file first in the ILPTO) get the better end of the deal: as has mentioned in a previous post, as of January 1, 2011, an applicant who first files in Israel can have his application examined in accelerated fashion without paying an extra fee, and obtain a substantive office action within three months. Assuming allowance can be gained quickly in Israel, that applicant can use the quick allowance in Israel to obtain PPH status – at no extra cost – for a corresponding application in the much larger and more commercially significant U.S. market.

Although bilateral PPH is not as significant as PCT-PPH, it is a step in the right direction for the ILPTO, and new Commissioner Asa Kling and his staff are to be commended for completing this arrangement less than two months into his term. If Israel succeeds in becoming a PCT search and examination authority, it would stand to reason that Israel will also conclude a PCT-PPH agreement with the USPTO, which would truly be a boon for Israel-based applicants.

The form used for requesting PPH in the ILPTO does raise at least one important question, however: it’s sufficient for PPH applicants to direct the ILPTO to the allowed claims on the USPTO’s public PAIR, instead of supplying a hard copy themselves. That means the ILPTO staff is competent enough to make its way through public PAIR. If that’s the case, why are patent applicants in Israel still required to provide copies of prior art patent publications that can be downloaded from various sites on the internet just as easily as allowed US claims can be downloaded by the ILPTO staff from PAIR?

A Thanksgiving Present from the Israel PTO: Proposed New Expedited Examination Program To Make Examination in Israel More Attractivetag:typepad.com,2003:post-6a0112793f1c9d28a40134899481ae970c2010-11-28T23:34:18+02:002010-11-28T23:34:18+02:00Although the notion of a meal of thanks is well enshrined in Jewish tradition, Thanksgiving is a distinctly American holiday. Nevertheless, over the weekend the Israel PTO gave Israel patent applicants something to (hopefully) be thankful for. Seasoned U.S. patent practitioners will recall a time when an applicant who wished...Daniel Feigelson

Although the notion of a meal of thanks is well enshrined in Jewish tradition, Thanksgiving is a distinctly American holiday. Nevertheless, over the weekend the Israel PTO gave Israel patent applicants something to (hopefully) be thankful for.

Seasoned U.S. patent practitioners will recall a time when an applicant who wished to have his application examined on an expedited basis could file a “petition to make special” on several grounds. In 2006 this practice was changed, so that the only remaining grounds for filing a petition to make special are the inventor’s age or health or under the Patent Prosecution Highway. See MPEP 708.02. Otherwise, the petition to make special program was supplanted by the accelerated examination program (MPEP 708.02(a)). While the latter program has been more successful than its predecessor in speeding up the examination of subject applications, its requirements are much more onerous, as the applicant must conduct a rigorous prior art search before filing and essentially prepare the first Office Action for the Examiner.

The comparable program in Israel can be found in Regulation 35(a) of the Patents Regulations, which enables applicants having good reason to petition the Commissioner to expedite the examination of his application. Typically such requests are based on concerns about possible infringement by a competitor and/or the imminent launch by the applicant of a product intended to covered by the claims of the patent application.

The Israel PTO has now announced that as of January 1, 2011, applicants who have filed an application in Israel and who plan file foreign applications claiming priority from that Israel application may request expedited examination on this basis alone. The catch is that as part of the request, applicants must file a declaration stating that the Israel application is “the first one filed on the invention”; presumably what the ILPTO means is that the Israel application is the first one filed anywhere in a Paris Convention country on the claimed invention. In exchange, the ILPTO promises to deliver a “comprehensive” examination report within three months of the approval of the request for expedited examination. Unfortunately, the report will be delivered in Hebrew, although apparently if the applicant so requests, the ILPTO will prepare an English version of the examination report for consideration by the PCT search authority per PCT Rule 4.12.

If, as expected, Israel and the USA sign a Patent Prosecution Highway (PPH) agreement, then the newly-announced policy for expedited examination would make the use of the PPH easier for Israeli applicants, since they would be able to file first in Israel and obtain an examination report during the priority year. Presently the combined filing and initial publication for an Israel patent application is 1194 shekels (about 330 dollars), and the fee for requesting expedited examination is 685 shekels (about 185 dollars). For applicants wishing to obtain a U.S. patent quickly, this is small price to pay to be able to take advantage of the PPH, especially compared to the cost of accelerated examination when search and attorney fees are taken into account. It will also be less costly and faster than utilizing the PCT-PPH route by first filing a provisional application, then using the EPO as the PCT search authority.

Moreover, it does not appear that applicants wishing to take advantage of this new form of expedited examination in Israel would be precluded from filing the same application as a U.S. provisional application on the same day or shortly after the application is filed in Israel (provided that their invention is not a defense technology-related invention, the foreign filing of which is statutorily prohibited).

The big question is whether or not the ILPTO is really capable of providing a “comprehensive” examination report in every case of expedited examination. As I noted in a previous post, some Israeli examiners do a first-rate job, finding the most relevant art and clearly explaining its applicability to the patentability of all pending claims; but other examiners don’t find the best art, and/or mis-apply the prior art they do find, and/or do a poor job of explaining how the art applies to the pending claims, and/or don’t explain how the art applies to each and every claim. If the ILPTO has developed a system for ensuring that all its examiners can provide first-rate examination reports, then this weekend’s announcement is a welcome one.

Will Israel be Joining the U.S. Patent Prosecution Highway? (And If So, Does It Really Matter?)tag:typepad.com,2003:post-6a0112793f1c9d28a40134891706d6970c2010-11-17T19:23:26+02:002010-11-17T19:23:26+02:00Over the last several years, the USPTO has entered into a number of bilateral agreements under the rubric of what it calls “The Patent Prosecution Highway” (PPH). The general idea is to reduce the overall examination workload at participating patent offices. For example, if someone first files an application at...Daniel Feigelson

Over the last several years, the USPTO has entered into a number of bilateral agreements under the rubric of what it calls “The Patent Prosecution Highway” (PPH). The general idea is to reduce the overall examination workload at participating patent offices. For example, if someone first files an application at the UK patent office and obtains a favorable examination report there, he may use that favorable report as a basis for expediting examination of a U.S. application that claims priority from the UK application. Under the PPH, rather than waiting in the examination queue in accordance with its filing date, the U.S. application will be moved near the front of the line. Although the USPTO will still conduct its own examination of a PPH-advanced application, anecdotal evidence suggests that US examiners will be more likely to find allowable claims in PPH applications than non-PPH applications.

Unfortunately, in its bilateral form, the PPH is of somewhat limited utility. For starters, participation in the PPH in its bilateral form has somewhat onerous requirements that render the vast majority of applications PPH-ineligible. This is partly due to the fact that PPH in its bilateral form is based on the somewhat anachronistic model that a citizen of country A will file first in country A and then later file in country B, claiming Paris convention priority from the application in country A.

Furthermore, while in theory PPH agreements are bi-directional, in practice this is may not be so when one patent office conducts examination more quickly than the other. To illustrate, although a favorable examination report in a first-filed U.S. application can be used to advance prosecution in the UK, this is unlikely to happen, both because the UKPO conducts examination more quickly than the USPTO, and because most US applicants are likely to enter the UK via the EPO.

In any event, other offices with which the USPTO has established bilateral PPH agreements are the EPO and the patent offices of Japan, Korea, Australia, Austria, Canada, Finland, Germany, Hungary, Russia, Singapore and Spain.

Where the PPH is really useful is in the context of the PCT. The US has PCT-PPH agreements with Austria, Japan, Korea, Russia, Spain and the EPO. Whereas a US-based applicant whose UK application claims priority from a US provisional cannot avail himself of a favorable UK examination report to get his US non-provisional fast-tracked under the PPH, if that applicant files a PCT application claiming priority from his US provisional, has his search done at, say, the EPO or KIPO, and receives a favorable WOISA or IPRP, he can use WOISA or IPRP as basis for entering the PPH. Moreover, according to Carol Bidwell of WIPO, figures to date indicate that US applications filed under the PCT-PPH program have an extremely high allowance rate, and are allowed very quickly. Obviously, this makes PCT-PPH a very attractive option for applicants who want US examination to proceed quickly.

Last year the Israel PTO announced that it was being given the opportunity to become a PCT search authority. In past posts I have argued that although the extending of this opportunity is nice feather in the ILPTO’s cap, the real goal should be to become a PCT search authority recognized by the USPTO. Because the ILPTO will likely charge significantly less than the EPO or the USPTO for PCT searches, becoming a US-recognized PCT search authority could result in an influx of search fees to the ILPTO, while lowering the cost of the PCT process for US- and Israel-based applicants.

Rumor now has it that the ILPTO and USPTO have agreed for the ILPTO to join the PPH; I’ll believe this when I see it, i.e. when an official announcement is made by the ILPTO and/or the USPTO themselves. Even if the rumor is true, it’s unclear that Israel’s joining the PPH would have much immediate impact. Straight-up bilateral PPH would only benefit those Israeli applicants who first file in Israel, then file in the USA claiming priority from the Israel application, then receive a favorable examination report from the ILPTO before the USPTO issues a first OA. That’s a set of circumstances that simply won’t apply to most Israeli applicants. Conversely, for US applicants who file in Israel, the issuance of a Notice of Allowance in the USA will often occur before examination is completed in Israel, and may serve as the basis for allowance of the Israel application under 17(c) of the Israel patent statute. Why invoke the PPH to merely expedite examination when you can gain allowance straight away?

Furthermore, in many cases, the signing of a PPH agreement with the USA would not provide Israeli applicants with any benefits beyond what they already enjoy. This is because, presently, Israeli applicants can take advantage of the PCT-PPH system: many, if not most, Israeli applicants file U.S. provisional applications as their first filings, then file a PCT claiming priority from the provisional. Since Israelis must use the USPTO or EPO for PCT search and examination, a favorable WOISA or IPRP at the EPO will facilitate use of the PPH upon entry into the national phase in the USA.

What would be good about the signing of a PPH agreement is that it would constitute a first step toward becoming a PCT-PPH search authority. Obviously, even if Israel soon joins the PPH, and even if Israel becomes a PCT search authority (a development expected sometime in 2011), the ILPTO will need to prove its mettle as a PCT search authority before the US will be willing to recognize it as a PCT-PPH office. But if the ILPTO can eventually join the ranks of PCT-PPH patent offices, that would be a boon for both the ILPTO and US-based applicants.

The Israel PTO as a PCT Search Authority: Making it Worktag:typepad.com,2003:post-6a0112793f1c9d28a4013483e7958e970c2010-06-11T14:35:10+03:002010-06-11T14:36:29+03:00Much hay was made in Israel last fall when WIPO decided to allow the Israel PTO to try to become a PCT search and examination authority. At the time, the Commissioner of Patents sent out a letter in Hebrew to the ILPTO email list (click here for translation by yours...Daniel Feigelson
<div xmlns="http://www.w3.org/1999/xhtml"><p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"><a href="http://djf.typepad.com/.a/6a0112793f1c9d28a4013483e6e542970c-pi" style="FLOAT: right"><img alt="WIPO_logo_2010" class="asset asset-image at-xid-6a0112793f1c9d28a4013483e6e542970c " src="http://djf.typepad.com/.a/6a0112793f1c9d28a4013483e6e542970c-120wi" style="MARGIN: 0px 0px 5px 5px" /></a> Much hay was made in Israel last fall when WIPO decided to allow the Israel PTO to try to become a PCT search and examination authority.<span style="mso-spacerun: yes">&#0160; </span>At the time, the Commissioner of Patents sent out a <span class="asset asset-generic at-xid-6a0112793f1c9d28a4013483e68288970c"><a href="http://djf.typepad.com/files/letter-in-hebrew.pdf">letter in Hebrew</a></span> to the <a href="http://www.justice.gov.il/MOJHeb/RashamHaptentim/Tfuza.htm"><font color="#800080">ILPTO email list</font></a> (click here for <span class="asset asset-generic at-xid-6a0112793f1c9d28a4013483e6a2c8970c"><a href="http://djf.typepad.com/files/translation.doc">translation</a></span> by yours truly) explaining the goings-on that occurred in Geneva leading up to the decision.<span style="mso-spacerun: yes">&#0160; </span>The local press picked up the story as well, in most cases inaccurately reporting that this meant that Israelis could now file PCT applications.<span style="mso-spacerun: yes">&#0160; </span>(Actually, the Israel PTO has been a PCT receiving office since 1996.)<span style="mso-spacerun: yes">&#0160; </span>One firm whose partners are known to be publicity hounds even finagled an interview on one of the television news programs to explain the importance of WIPO’s decision. <o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"></span>&#0160;</p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">Other than that instance of shameless self-promotion, I suspect that much of the hullabaloo was less self-aggrandizement and more of the Sally Field “<a href="http://video.aol.ca/video-detail/sally-fields-1985-oscar-acceptance-speech/2595605809/?icid=VIDURVMOV01"><font color="#800080">You like me, you really like me</font></a>” variety: given the hypocrisy and immorality to which Israel is constantly subjected to at the UN and other international fora, it was nice to receive some positive recognition for a change, from a UN body no less. <o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"></span>&#0160;</p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">Even then, with the decision there was a reminder that politics always plays a role in these sorts of decisions.<span style="mso-spacerun: yes">&#0160; </span>As explained in the Commissioner’s letter to the Israel patent community, part of the <em>quid quo pro</em> for extending the invitation to Israel was that Egypt would also be given the opportunity to become an ISA.<span style="mso-spacerun: yes">&#0160; </span><o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><em><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"></span></em>&#0160;</p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><em><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">Egypt?</span></em></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><em><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"></span></em><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"><span style="mso-spacerun: yes">&#0160; </span></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"><span style="mso-spacerun: yes"></span></span><o:p></o:p></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"><a href="http://djf.typepad.com/.a/6a0112793f1c9d28a40133f0ba7ab1970b-pi" style="FLOAT: left"><img alt="4230-1971-Dodge-Dart" class="asset asset-image at-xid-6a0112793f1c9d28a40133f0ba7ab1970b " src="http://djf.typepad.com/.a/6a0112793f1c9d28a40133f0ba7ab1970b-120wi" style="MARGIN: 0px 5px 5px 0px" /></a> <a href="http://djf.typepad.com/.a/6a0112793f1c9d28a40133f0baf5ca970b-pi" style="FLOAT: right"><img alt="2010_cadillac_cts-v_6_2l_sfi-pic-8434145566501870067" class="asset asset-image at-xid-6a0112793f1c9d28a40133f0baf5ca970b " src="http://djf.typepad.com/.a/6a0112793f1c9d28a40133f0baf5ca970b-120wi" style="MARGIN: 0px 0px 5px 5px" /></a> What a joke.<span style="mso-spacerun: yes">&#0160; </span>Comparing the Egyptian Patent Office to the ILPTO is like comparing a 1971 Dodge Dart to a 2010 Cadillac.<span style="mso-spacerun: yes">&#0160; </span>As statistics available on the <a href="http://www.egypo.gov.eg/inner/english/News_Info_5.html"><font color="#800080">Egypt PO</font></a> and the <a href="http://www.justice.gov.il/MOJHeb/RashamHaptentim/MeidaKlali/MeidaStatisti/"><font color="#800080">ILPTO</font></a> websites attest, the Israel PTO has far more examination experience, fielding roughly 3.5 times more applications annually than the Egyptian PO.<span style="mso-spacerun: yes">&#0160;&#0160; </span>The just-published <a href="http://www.wipo.int/export/sites/www/ipstats/en/statistics/pct/pdf/901e_2009.pdf"><font color="#800080">PCT Yearly Review</font></a> also has some interesting statistics in this regard as well.<span style="mso-spacerun: yes">&#0160; <a href="http://djf.typepad.com/.a/6a0112793f1c9d28a4013483e5d713970c-pi" style="FLOAT: left"></a></span>But the Egyptian PO is, evidently, the best the Arab world has to offer, and the Arab world wasn’t going to acquiesce to Israel’s entry into the ranks of PCT search authorities without one of its own being afforded the same opportunity.&#0160;&#0160;<span style="mso-spacerun: yes">&#0160; <a href="http://djf.typepad.com/.a/6a0112793f1c9d28a4013483e5a693970c-pi" style="FLOAT: right"></a></span><o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"></span>&#0160;</p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">Setting the politics of the decision aside, the WIPO decision represents several opportunities for the ILPTO.<span style="mso-spacerun: yes">&#0160; </span>First, it’s an opportunity for the ILPTO to move into ranks of the world’s first-rate patent offices, instead of continuing to operate, as one local practitioner puts it, as a 19th century patent office in a country with 21st century technology.<span style="mso-spacerun: yes">&#0160; </span>Israel’s greatest natural resource is it brainpower, and in that regard the examining corps at the ILPTO has the potential to be one of the best in the world.<span style="mso-spacerun: yes">&#0160; </span>It’s much harder to gain university admission in Israel than it is in, say, the USA, and as a consequence Israeli university graduates tend to be better educated, on average, than their American counterparts.<span style="mso-spacerun: yes">&#0160; </span>Because many Israelis were themselves born abroad, or are the children of immigrants, particularly from the former Soviet Union, many Israeli examiners have facility in English and Russian or other European languages, which can enhance their search abilities.<span style="mso-spacerun: yes">&#0160; </span><o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"></span>&#0160;</p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">But in addition, if the ILPTO becomes and ISA/IPEA, it could simultaneously contribute to the reduction in the backlog at the USPTO and elsewhere, reduce costs for applicants, and increase its own revenues.<span style="mso-spacerun: yes">&#0160; </span>How so? <o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"></span>&#0160;</p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">First, the ILPTO allows the filing of applications in English, which opens up the possibility of becoming a search authority for PCT applications filed in other jurisdictions, most notably the USA and the EPO.<span style="mso-spacerun: yes">&#0160; </span>Couple that with the fact that ILPTO examiners cost less to employ than their counterparts at the USPTO or the EPO, and the ILPTO could potentially be an attractive search option for applicants from other countries, just as US applicants have in recent years begun using the Korean Patent Office to conduct PCT searches, partly because of the lower cost vis-à-vis the USPTO, and partly because of the timeliness with which KPO searches are delivered (as opposed PCT searches conducted in the USA, which are generally of low quality and not infrequently delivered after the 30-month national phase deadline has passed).<span style="mso-spacerun: yes">&#0160; </span><o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"></span>&#0160;</p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">There are two steps the ILPTO needs to take to make this happen.<span style="mso-spacerun: yes">&#0160; </span>First, it needs to improve the quality of its examination and reporting.<span style="mso-spacerun: yes">&#0160; </span>Some ILPTO examiners are already world-class.<span style="mso-spacerun: yes">&#0160; </span>They find the most relevant art, and they clearly explain how it applies to the claims.<span style="mso-spacerun: yes">&#0160; </span>But there are still a significant number who continue to practice, or worse, are being trained, to do a poor job: they don’t find the best prior art, or they mis-apply the art that they find, or rather than explain how the art they’ve found applies to each claim, they produce a one-liner along the lines of, “The claims are obvious in view of publication X”.<span style="mso-spacerun: yes">&#0160; </span>This has to be remedied, so that all of the examiners consistently produce first-rate work.<span style="mso-spacerun: yes">&#0160; </span>Fortunately, it’s an attainable goal.</span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"></span>&#0160;</p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"></span><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"><a href="http://djf.typepad.com/.a/6a0112793f1c9d28a4013483e76d56970c-pi" style="FLOAT: left"><img alt="Pph_Logo" class="asset asset-image at-xid-6a0112793f1c9d28a4013483e76d56970c " src="http://djf.typepad.com/.a/6a0112793f1c9d28a4013483e76d56970c-320wi" style="MARGIN: 0px 5px 5px 0px" /></a> <a href="http://djf.typepad.com/.a/6a0112793f1c9d28a40133f0bcb7e2970b-pi" style="FLOAT: left"></a>The second step involves getting other patent offices to recognize the searches done at the ILPTO.<span style="mso-spacerun: yes">&#0160; </span>This is where politics re-enters the picture.<span style="mso-spacerun: yes">&#0160; </span>Because no one, not even an Israeli applicant, is going to want to use the ILPTO to search if that search doesn’t have some cachet outside of Israel.<span style="mso-spacerun: yes">&#0160; </span>Israel needs to get on board with the US <a href="http://www.uspto.gov/patents/init_events/pph/index.jsp">patent prosecution highway</a>, and with other countries that have similar arrangements.<span style="mso-spacerun: yes">&#0160; </span>While the PPH leaves much to be desired, these days anything that can help an applicant for a US patent decrease application pendency and increase the likelihood of allowance is going to warrant a close look from US-based applicants, particularly if it can help the applicant reduce its costs.<span style="mso-spacerun: yes">&#0160; </span><o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"></span>&#0160;</p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">I believe that the current Commissioner appreciates, at least in some respects, the need to make nice with the decision-makers in other patent offices and to come to agreements with them regarding searches and examinations done in Israel.<span style="mso-spacerun: yes">&#0160; </span>He said as much in his letter referred to above.<span style="mso-spacerun: yes">&#0160; </span>In the six months or so he has left in office, this would be a good thing for him to concentrate on, and his successor would also do well to make it a priority.<span style="mso-spacerun: yes">&#0160; </span></span></p></div>
Fawning Over Francis?tag:typepad.com,2003:post-6a0112793f1c9d28a40133ef5546f9970b2010-05-30T15:25:49+03:002010-06-01T11:04:07+03:00As reported in an earlier post, last fall the Israel patent community was left scratching its head as a result of the Commissioner’s about-face regarding Australia. Specifically, in December 2008 the Commissioner indicated that applicants would no longer be able to piggy-back on an allowance in Australia to obtain allowance...Daniel Feigelson
<div xmlns="http://www.w3.org/1999/xhtml"><p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond">As reported in an <a href="http://www.iliplaw.com/2009/09/commissionercummagician-making-australia-disappear-and-reappear.html"><font color="#800080">earlier post</font></a>, last fall the Israel patent community was left scratching its head as a result of the Commissioner’s about-face regarding Australia.<span style="mso-spacerun: yes">&#0160; </span>Specifically, in December 2008 the Commissioner indicated that applicants would no longer be able to piggy-back on an allowance in Australia to obtain allowance of a corresponding patent application in Israel, because the ILPTO’s experience had shown that Australian examinations weren’t reliable.<span style="mso-spacerun: yes">&#0160; </span>In September 2009, the Commissioner reversed course and again recognized Australia for this purpose, announcing his decision in a tersely worded statement that provided no reasons for the change of heart.<span style="mso-spacerun: yes">&#0160; </span>At the time, some speculated, jokingly, that there had been a pay-off of some sort to the ILPTO, perhaps a junket to Australia.</span><o:p></o:p></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond"></span>&#0160;</p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond">The joke wasn’t far off the mark.<span style="mso-spacerun: yes">&#0160; </span>In late September, the WIPO general assembly decided to grant Israel the opportunity to become a PCT International Search and Examination Authority.<span style="mso-spacerun: yes">&#0160; </span>The reinstatement of Australia a few weeks earlier was done in anticipation of the WIPO meeting at which this decision was taken: Dr. Meir Noam, the Commissioner of Patents, reasoned that by reinstating Australia, he would curry favor with <a href="http://en.wikipedia.org/wiki/Francis_Gurry"><font color="#800080">Francis Gurry</font></a>, the head of WIPO and an Australian national.<span style="mso-spacerun: yes">&#0160; </span>While it’s impossible to know if the ruse worked without asking Mr. Gurry himself, it’s hard to believe that the head of WIPO would condition support for recognition of any particular country as an ISA on how that country regarded the WIPO head’s home country, rather than, say, that country’s competence at prior art searching and analysis.<span style="mso-spacerun: yes">&#0160; </span>It’s even more difficult to believe that Mr. Gurry actually pays attention to details of Israel patent practice such as whether or not one can piggy-back on Australia to gain allowance in Israel.<span style="mso-spacerun: yes">&#0160;</span></span><o:p></o:p></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond"></span>&#0160;</p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond">While Dr. Noam has admitted that he was trying to get in Mr. Gurry’s good graces for purposes of having Israel named as a potential ISA, it’s hard not to wonder if, in reversing his position on Australia, Dr. Noam wasn’t also angling for a job at WIPO.<span style="mso-spacerun: yes">&#0160; </span>He has been pushing for stronger ties with WIPO, and during his tenure hired an Israeli national from WIPO’s administrative ranks to be an adjudicator at the ILPTO.<span style="mso-spacerun: yes">&#0160; </span>In February 2009 the Cabinet decided to limit the terms of high-ranking civil servants across the board, so by last September, it was probably clear to Dr. Noam that he would be out of a job at the end of 2010.<span style="mso-spacerun: yes">&#0160; </span>Maybe he was hoping that by placing politics, both ILPTO and personal, above substantive concerns about the quality of patent examination in Australia, Mr. Gurry would be more likely to offer him a job.</span><o:p></o:p></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond"></span>&#0160;</p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond">What is clear is that although during Dr. Noam’s tenure as Commissioner, the ILPTO has made progress on some fronts, in others it still lags behind, and in some ways things have gone precipitously downhill.<span style="mso-spacerun: yes">&#0160; </span>On the up side, many new examiners have been hired, and according to the ILPTO, as of April 2010 the backlog in patent examination had dropped in most areas to between about 2-3 years from national phase entry to the beginning of examination.<span style="mso-spacerun: yes">&#0160; </span>Similarly, the backlog in judicial decisions (e.g. patent and trademark oppositions; patent, trademark and design cancellation actions; <em>ex parte</em> appeals within the ILPTO) had dropped significantly – although given the fact that Dr. Noam’s predecessor had failed to render a single substantive patent decision in the over four years he was on the job, things couldn’t have gotten any worse in that regard.<span style="mso-spacerun: yes">&#0160; </span>And as discussed in a <a href="http://www.iliplaw.com/2009/12/monty-python-and-the-israel-patents-database.html"><font color="#800080">previous post</font></a>, there is now a publicly-available online <a href="http://www.ilpatsearch.justice.gov.il/UI/MainPage.aspx"><font color="#800080">database</font></a> that facilitates checking the status of Israel patent applications.<span style="mso-spacerun: yes">&#0160; </span></span><o:p></o:p></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond"></span>&#0160;</p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond">Nevertheless, not all is rosy.<span style="mso-spacerun: yes">&#0160; </span>The quality of OAs remains spotty, with many examiners, even senior ones, still failing to explain how the art they cite applies to which claims.<span style="mso-spacerun: yes">&#0160; </span>In the 1990’s Israel was one of the first countries to introduce electronic filing of trademarks – credit Nurit Maoz, who is still head of the trademarks division, for that – but it still isn’t possible to file a patent application electronically in Israel, let alone to view patent file histories online.<span style="mso-spacerun: yes">&#0160; </span>Similarly, the quality of the judicial decisions has not always been on the mark.<span style="mso-spacerun: yes">&#0160; </span>Witness, for example, Dr. Noam’s decision in IL 100816, a case in which a patent containing 1 independent and five dependent claims was at issue.<span style="mso-spacerun: yes">&#0160; </span>After disposing of claim 1 as being obvious over the prior art, Dr. Noam concluded that the remaining claims, by virtue of being dependent from claim 1, were necessarily obvious and thus invalid – without actually analyzing the additional recitations in those dependent claims&#0160;to see if they distinguished over the prior art. </span><o:p></o:p></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond"></span>&#0160;</p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond">Of greater concern is the observation that Dr. Noam has become increasingly authoritarian in his approach to the running of the ILPTO.<span style="mso-spacerun: yes">&#0160; </span>While it was traditional for Commissioner to circulate letters from time to time clarifying ILPTO policies, Dr. Noam has issued more such circulars, over 80, than any of his predecessors.<span style="mso-spacerun: yes">&#0160; </span>(One PTO employee I spoke with said that they no longer keep up with all the circulars because there are simply too many.)<span style="mso-spacerun: yes">&#0160; </span>In several cases, these circulars were so unclear that they necessitated subsequent letters of clarification – in some cases several such clarification letters.<span style="mso-spacerun: yes">&#0160; </span></span><o:p></o:p></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond"></span>&#0160;</p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond">Furthermore, whereas in the past those circulars were issued with respect to questions that had arisen regarding interpretation of the Patent statute and regulations, or policies adopted for administrative convenience, Dr. Noam has in some cases tried to impose new policies that are substantive policy-making and thus properly the province the Knesset (the legislature), not a civil servant.<span style="mso-spacerun: yes">&#0160; </span>Placing limitations on the filings of <a href="http://www.iliplaw.com/2010/02/civil-servant-gone-wild-the-israel-commissioner-of-patents-endrun-on-the-patent-statute.html"><font color="#800080">divisionals-of-divisionals</font></a> is one example.<span style="mso-spacerun: yes">&#0160; </span>Another, on tap for the beginning of July, is a <a href="http://www.justice.gov.il/NR/rdonlyres/ABDA73F2-83CB-426F-94E1-527F9840F953/18453/78.pdf"><font color="#800080">requirement</font></a>, newly imposed by the Commissioner without legal basis therefor, that applicants provide copies of OAs from corresponding applications in foreign jurisdictions and their responses to the points raised in those foreign OAs – even if the claims pending in Israel are different or the applicant has not yet filed a response to the original OA.<span style="mso-spacerun: yes">&#0160; </span>(American readers: echoes of the Dudas administration?) </span><o:p></o:p></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond"></span>&#0160;</p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond">Nor has the Commissioner made his administration a model of transparency.<span style="mso-spacerun: yes">&#0160; </span>The decision to reinstate Australia was done without explanation, as was the decision to attempt to require applicants to do the ILPTO’s work by imposing draconian reporting requirements.<span style="mso-spacerun: yes">&#0160; </span>(Curiously, earlier this month, in yet another circular, the Commissioner announced that in the future he would disseminate draft circulars and solicit comments before issuing new circulars.<span style="mso-spacerun: yes">&#0160; </span>Yet later in the same week, he issued more circulars without going through such a process; and to date, no draft circulars have been disseminated.)<span style="mso-spacerun: yes">&#0160; </span>Until March of this year, the ILPTO’s web site contained telephone listings of all examiners and many other ILPTO personnel; that list is now gone, replaced with a much more <a href="http://www.justice.gov.il/MOJHeb/RashamHaptentim/yeziratKesherPatent.htm"><font color="#800080">truncated list</font></a> that doesn’t include examiner telephone numbers.<span style="mso-spacerun: yes">&#0160; (Here is a copy of the <span class="asset asset-generic at-xid-6a0112793f1c9d28a40133ef5eafe5970b"><a href="http://djf.typepad.com/files/list-of-ilpto-personnel-by-department-march-2009.xls">list of ILPTO personnel</a>&#0160;from March 2009, organized by department.</span>) </span>In addition, in some cases information is sent via email, without being posted on the ILPTO’s web site.<span style="mso-spacerun: yes">&#0160; </span>And the web site itself doesn’t contain, for example, copies of all ILPTO judicial decisions.<span style="mso-spacerun: yes">&#0160;&#0160;</span></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond"><span style="mso-spacerun: yes"></span></span>&#0160;</p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond"><span style="mso-spacerun: yes"></span></span><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-fareast-font-family: &#39;Times New Roman&#39;; mso-bidi-font-family: Miriam; mso-ansi-language: EN-US; mso-fareast-language: HE; mso-bidi-language: HE"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-fareast-font-family: &#39;Times New Roman&#39;; mso-bidi-font-family: Miriam; mso-ansi-language: EN-US; mso-fareast-language: HE; mso-bidi-language: HE">Given some of his more recent actions, there will probably be many in the Israel patent community who will not mourn Dr. Noam’s exit as Commissioner.<span style="mso-spacerun: yes">&#0160; </span><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-fareast-font-family: &#39;Times New Roman&#39;; mso-bidi-font-family: Miriam; mso-ansi-language: EN-US; mso-fareast-language: HE; mso-bidi-language: HE">As for his relationship with WIPO, we will have to wait and see if Dr. Noam ultimately lands a WIPO sinecure, and if he does secure such a post, we may never know if he actively pursued it.<span style="mso-spacerun: yes">&#0160; </span></span>One interesting tidbit, though: Mr. Gurry is in Israel this week, and a letter from the Association of Patent Attorneys in Israel (APAI) to its members stated that Dr. Noam urged that there be a “massive” turnout of patent practitioners at a reception for Mr. Gurry to be held tomorrow in Tel-Aviv.<span style="mso-spacerun: yes">&#0160; </span>So that we can show our collective obsequiousness?</span></span></p></div>
Let’s Confuse Everyone - Update On Excess Claims Fees for Israel Patent Applications: New Regulations Published; Unclear if Excess Claims May be Cancelled Prior to Examination to Avoid Fees, or if Excess Claims Fees are Due in National Phase Applicationtag:typepad.com,2003:post-6a0112793f1c9d28a40120a7bdbbc7970b2010-01-10T11:15:58+02:002010-01-10T11:15:58+02:00As noted in an earlier posting, on December 1, 2009, the Knesset’s Constitution, Statute and Law Committee approved the imposition of a fee of 500 shekels (approximately $130 at present exchange rates) for each claim in excess of 50. Now, you’d think that even the Knesset and the Justice Ministry...Daniel Feigelson
<div xmlns="http://www.w3.org/1999/xhtml"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">As noted in an <a href="http://www.iliplaw.com/2009/12/excess-claims-fees-for-israel-patent-applications.html"><font color="#800080">earlier posting</font></a>, </span><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">on December 1, 2009, the Knesset’s Constitution, Statute and Law Committee approved the imposition of a fee of 500 shekels (approximately $130 at present exchange rates) for <strong>each</strong> claim in excess of 50.<span style="mso-spacerun: yes">&#0160; </span>Now, you’d think that even the Knesset and the Justice Ministry (which drafted the actual wording of the update) could get something as simple as this right, but <em>noooooo</em> – they had to word it in a way that sows confusion.<span style="mso-spacerun: yes">&#0160; </span>To wit:<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">&#0160;<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">Notice of the amended regulations was published in the official state publication journal (the equivalent of the Federal Register in the USA) on December 24, 2009; the new regulations will take effect 30 days from publication, viz. on January 23, 2010.<span style="mso-spacerun: yes">&#0160; </span>The amended regulations (namely the Second Schedule), in relevant part, read as follows:<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">&#0160;<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">Second Schedule<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left; tab-stops: 20.0pt 45.0pt"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">(A) <span style="mso-tab-count: 1"></span>1. <span style="mso-tab-count: 1"> </span>Upon submission of an application for patent per §11(a) of the statute, 1021 NIS<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left; tab-stops: 20.0pt 45.0pt"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial"><span style="mso-tab-count: 1"> &#0160;&#0160; </span>1A. <span style="mso-tab-count: 1">&#0160; </span>Fee for submission of each claim in a patent application beginning with the 51st claim, 500 NIS * * *<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">&#0160;<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">This brings us to our first problem: while the revised regulations say that the fee for the first 50 claims for an application filed under §11(a) of the Patents Law is due upon filing of the application (a position necessitated by §15 of the statute, which says that an application will not be accorded a filing date until the filing fee has been paid), and that the fee for each claim in excess of 50 is 500 shekels, the amended regulations do not say <strong>when</strong> the fee for each excess claim is due.<span style="mso-spacerun: yes">&#0160; </span>If the excess claims fees are due upon filing, then applicants will need to carefully consider how many claims to file.<span style="mso-spacerun: yes">&#0160; </span>But if the payment of excess claims fees can be deferred until later, why not file a gazillion claims and then decide how to proceed once you’ve seen how things are progressing in the corresponding cases in Europe and the USA?<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">&#0160;<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">In a letter sent out on January 7, 2010, the Commissioner apparently tried to clarify this point: “The obligation to pay the fee [for excess claims] commences at the time of the filing of the patent application or at the time the specification is amended to include more than 50 claims.<span style="mso-spacerun: yes">&#0160; </span>Such an amendment is predicated upon payment of the appropriate fee.”<span style="mso-spacerun: yes">&#0160; </span>This implies that as soon as an application is filed with excess claims, the excess claims fees are due, even though the amended regulation does not state this.<span style="mso-spacerun: yes">&#0160; </span><o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">&#0160;<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">However, the Commissioner’s letter goes on to state that “failure to pay the fee for claims 51 and up will result in delay of examination of the application until the fee is paid”, implying that the excess claims fees themselves are not due upon filing, but only when the applicant actually wants examination to proceed.<span style="mso-spacerun: yes">&#0160; </span>Hence, writes the Commissioner, the language of the pre-examination letter that is sent to applicants shortly before substantive examination commences “will be updated…to remind the patent applicant community to pay the entirety of the fee due before the application comes up for examination.”<span style="mso-spacerun: yes">&#0160; </span><o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">&#0160;<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">Thus, the Commissioner’s latter statements imply that applicants who file applications with more than 50 claims but do not pay the excess claims fees at the time of filing, then cancel the excess claims prior to the commencement of substantive examination, will <span style="text-decoration: underline;">not</span> be required to pay the excess claims fees, ever (unless they re-insert the excess claims later).<span style="mso-spacerun: yes">&#0160; </span><o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">&#0160;<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">Nothing like taking what should be a straightforward amendment and making it unnecessarily complicated.<span style="mso-spacerun: yes">&#0160; </span>Presumably this matter will be clarified in the near future; personally, it seems to me that if the excess claims are cancelled prior to examination, an applicant shouldn’t have to pay for them, as the ILPTO hasn’t had to expend any extra resources examining the extra claims.<span style="mso-spacerun: yes">&#0160; </span>(By the same token, if the excess claims were already allow by the USA or the EPO, and the applicant request allowance under <a href="http://www.iliplaw.com/2009/11/israeli-progressiveness-israeli-selfflagellation.html"><font color="#800080">§17(c)</font></a>, I don’t see why the applicant should have to pay excess claims fees, as the Israel examiner isn’t going to have to do any real work anyway.)<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">&#0160;<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">Now for the second bit of confusion: <strong>it is unclear if the new regulations apply to the national phase of PCT applications filed in Israel</strong>.<span style="mso-spacerun: yes">&#0160; </span>How’s that?<span style="mso-spacerun: yes">&#0160; </span>Well, amended part (A)1 of the Second Schedule, which refers to the filing fee for the first fifty claims, refers to applications filed under §11(a) of the statute.<span style="mso-spacerun: yes">&#0160; </span>But national phase applications are filed under §48(d), not §11(a).<span style="mso-spacerun: yes">&#0160; </span>Thus part (A)(1) clearly does <span style="text-decoration: underline;">not</span> apply to national phase applications.<span style="mso-spacerun: yes">&#0160; </span><o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">&#0160;<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">Moreover, part (A)7 of the Second Schedule, which sets the fee for the filing of national phase applications filed under §48(d), was <span style="text-decoration: underline;">not</span> amended accordingly to refer to the first fifty claims.<span style="mso-spacerun: yes">&#0160; </span>The failure to amend part (A)7 could thus be taken as indicating that excess claims fees are <span style="text-decoration: underline;">not</span> to be imposed on national phase applications.<span style="mso-spacerun: yes">&#0160; </span><o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">&#0160;<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">On the other hand, new part (A)1A does not refer to a particular section of the statute, and simply sets a “Fee for submission of each claim in a patent application beginning with the 51st claim”.<span style="mso-spacerun: yes">&#0160; </span>Part (A)1A could thus be viewed as setting excess claims fees for national phase applications as well – although if that’s the case, why amend (A)1 at all?<span style="mso-spacerun: yes">&#0160; </span>And why number this statement (A)1A rather than place it elsewhere, where it will be clear it’s applicable to both regular and national phase applications?<span style="mso-spacerun: yes">&#0160; </span><o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">&#0160;<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">I have no doubt the ILPTO will adopt the view that excess claims fees are due for national phase applications.<span style="mso-spacerun: yes">&#0160; </span>Any national phase applicants who would like to test this by filing an application with 51 claims and then fight the ILPTO over the charge for the 51st claim are invited to <a href="mailto:djf@iliplaw.com">contact me</a> – I would be willing to fight the ILPTO on this point <em>pro bono</em>.<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond">&#0160;<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial">On the bright side, there’s one point that doesn’t seem to be confusing: it appears from the Commissioner’s letter that the ILPTO will allow applicants who originally paid for excess claims to cancel some of those excess claims and substitute them with others.<span style="mso-spacerun: yes">&#0160; </span>Thank goodness for small favors.<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-family: Arial"></span></p></span></div>